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Notes for effective state submitting procedure upon authorization of a European patent application

Along with the globalization of knowledge economy, there are rapidly increasing patent applications filed by applicants from China in Europe, and the competition for European market is becoming fiercer and fiercer. At the same time, cost for a European patent application is much higher than that in the United States, Japan and other states. After European patent authorization, it will cost tens of thousands of Euros if the applicant chooses many effective states where the patent is under protection. At present, at the time of filing of a new European patent application, all Contracting States shall be deemed to be designated. Later the European Patent Office will conduct a substantive review of the application. Subsequently, when the European Patent Office issues the notice for authorization and registration, the applicant may be required to choose the States (which need the effective procedure) from all Contracting States designated at the time of filing of the new application, so that effective protection and right safeguarding can be executed in respect of the authorized patent in these effective states. This essay briefly introduces the European effective state procedure and some notes, to assist all applicants and agencies to understand the process regarding European effective states.

II. Submission Period for European Effective State Procedure and Choice of States

Choice of an effective state in the European effective state procedure is closely associated with the designation of a Contracting State (subject to the payment of a designation fee) upon the filing of an application. Official fee to be collected in respect of the European designated states is fixed, according to current laws, and all the EPC member states shall be deemed to be designated upon the payment of the designation fee. However, before 2009, the official fee to be collected in respect of the European designated states is associated with the quantity of the designated states, so the official fee will be increased if any additional one designated state is increased. In the authorization of a European application, choice shall be made only from the list of the designated states which have been chosen upon the payment of the designation fee, and there is no chance to choose the undesignated states. Notably, because the quantity of EPC member states changes year by year, even if all EPC member states are deemed to be the designated states upon the filing of an application according to current laws, if there are 34 member states at the time of payment of the designation fee, and later there are 37 member states due to entry of new members at the time of authorization, then the effective states may be chosen only from the list of previous 34 member states while the newly additional three new members are not in the optional list of effective states.

According to the national laws of the Contracting States, the vast majority of Contracting States are required to finish the effective procedure within three months after the date of European patent authorization. Due to difference of the effective procedure of each Contracting State in Europe, the applicant is required to, within such three months, finish the choice of the Contracting States, the choice and entrustment of agencies of the Contracting States, the preparation for documents to be submitted for the effective application procedure and the payment of the fees. If there are relatively less states needing to go through the effective procedure as confirmed by the applicant, and only simple effective procedure is needed for these states, then the time for preparation will be enough; on the contrary, if there are many states needing to go through the effective procedure as confirmed by the applicant, and complicated effective procedure is needed for these states, then the time for preparation will be urgent. Therefore, it is suggested that the applicant may consider to confirm the choice of effective states upon the European application authorization in advance, that is, upon the applicant's receipt of the notice for authorization and registration (Communication under Rule 71(3) EPC) issued by the European Patent Office before the authorization, the applicant may start to prepare for confirming the choice of European effective states. The applicant may take into full consideration the market scope, production cost, protection extent of effective state, and other factors in choosing effective states.

III. Translation of Documents Submitted for European Effective State Procedure and Other Notes

The applicant may have the patent protected in each effective state selected upon the European patent authorization. All effective states have different requirements, formal submission procedures and fees because many European Contracting States have native languages other than English, French and German; therefore, the application documents or claims shall be translated into the official languages required by the effective states. The translation fee accounts for a relatively big proportion in costs generated by effective procedure. Since the implementation of the London Agreement on May 1, 2008, other European States have also entered into the Agreement one after another. The implementation of the London Agreement has saved a lot of translation costs for the applicant's submission of the effective state procedure, and has hence reduced the costs of the European patent application. The authors hereby set forth the translation regulations specified by states entering into the London Agreement, for the Contracting States with effective procedure upon European application authorization.

Native language of any of the above states is one of languages (English, French and German) for submission to the European Patent Office. The European patent upon authorization will automatically grant rights to the patent holder. Nonetheless, it is suggested that the effectiveness shall be registered with the patent authority by the entrusted agency in each of the above-mentioned effective states, so that the patent authority may easily contact the patent office of any effective state at the time of sequent issuance of notices.

If language for European patent application of the above states is English, then translation of claims in native language shall be submitted at the time of entry into the effective state procedure. Except Croatia among the above states, if the language for a European patent application of the rest states is French or German, then the translation (in English) of description and the translation (in native language) of claims shall be submitted at the time of entry into the effective state procedure.

2) Latvia, Lithuania, Slovenia and Macedonia

Whatever language for a European patent application is, translation (in native language) of claims must be submitted.

IV. Choice and Cost Control of Foreign Agencies

Similar to domestic patent agencies, there is also a big difference in the agency quality or the charging situation among many agencies of European states. If a European patent application has been entrusted to an agency of a state, and if the applicant chooses many states for the effective procedure in the sequent effective state procedure, then this European agency will set up new entrustment relationships with the partners in all effective states so as to deal with such states' effective procedure. The European agency will conduct unified communications with all agencies in all effective states so as to ensure the successful execution of the effective state procedure.

Costs for handling the effective state procedure consist of: agency fee of the European patent agency, agency fee of the local agencies in affective states, official fee of affective states, and translation fee of affective states. Among them, if the applicant chooses an effective state which requires the submission of the full text translation in the native language, then it will cost more translation fees in respect of the effective state.

For example, if a European patent application is entrusted to a German agency, and if the Germany is chosen at the time of sequent entry into the effective state procedure, then the German agency itself can deal with the effective procedure of Germany, without choosing any other partner. If the German agency has branches in other European states at the same time, and if an effective state with such branch is just optional for the applicant, then the attorney fee will also be relatively low.

Therefore, it will cost less in sequent submission of the effective state if a stable European agency with rich cooperative resources is chosen for submission of the European patent application.

In conclusion, the effective procedure upon authorization of a European patent application may involve laws and regulations of a number of states, and also involves a number of agencies. It is suggested that the applicant shall consider patent layout and consider the choice of effective states and cost estimates in advance at the time of the filing of the application, and shall actively prepare for entry into the effective state procedure upon receipt of the notice for authorization and registration, so that the agencies have sufficient time to prepare for the translation and effective procedure within a prescribed time limit. If there are a large number of effective states as confirmed by the applicant for the effective procedure, the applicant may consult the approximate cost for each state in advance to know the costs in advance and to choose appropriate effective states upon overall consideration of market demands and cost estimates.

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